Supreme Court Rejects Software Patents On Performing Generic Functions; Pretends That Lots Of Other Software Must Be Patentable

from the a-step-in-the-right-direction dept

For a few years now we've been covering a key software patent case, Alice v. CLS Bank, which was another chance to show that pure software patents shouldn't be granted. As you may recall, four years ago, the Supreme Court got to tackle the question of software patents in the Bilski case, but chose to punt instead, rejecting that particular patent, and arguing that the specific test that everyone relied on shouldn't be the only test -- but otherwise leaving a lot of confusion in its wake. It did help dump a few software patents, but left the wider question pretty open.

We had hoped that when the Supreme Court agreed to hear the Alice case it wouldn't miss another chance to actually add some clarity to what is and what is not patentable. It seemed like the perfect opportunity. As you may recall, the original appeals court (CAFC) ruling was a complete disaster, with 135 pages of different opinions -- with only one single paragraph having a majority view, rejecting the specific patent. But no one could agree on why or the larger questions.

It was as if CAFC were practically begging the Supreme Court to provide clarity and guidance.

Unfortunately, the Supreme Court didn't really do that. It technically "upheld" the CAFC ruling (that one paragraph) rejecting the patent (which basically covered a computerized escrow service) as unpatentable subject matter. It further makes clear that merely taking an abstract idea and doing it "on a computer" doesn't make it patentable. That's all good... But, while three Justices (Sotomayor, Ginsburg and Breyer) hoped the court would go further and basically say that business methods weren't patentable at all, the rest simply wouldn't go along with that, saying that "many computer-implemented claims are formally addressed to patent-eligible subject matter," but never giving any examples.

Instead, it notes that you can't get a patent if each step claimed in the patent "does no more than require a generic computer to perform generic computer functions." Except, uh, many people will point out that's all that software does. That's basically how software works, but the Justices don't seem to recognize that. So, it's a bit of a conundrum. The court says many software patents are perfectly good because they apply to patent-eligible subject matter, but that if the claims do no more than require a generic computer to perform generic computer functions, it's not patentable. You could read that to mean that basically most software patents are no longer allowed, but... that's going to involve an awful lot of wasted litigation to teach a bunch of courts, including the Supreme Court, that basically all software involves generic computer functions.

Part of the problem is that, like many non-technical people, many of the Justice seems to think that software is a lot more than it really is. They seem to think that there's some magic in software that goes beyond just a bunch of instructions for a computer to follow. So, now they're saying that just taking some ideas and telling a computer to follow instructions to implement that idea is not patentable... but they still argue that there's plenty of software that is patentable. So it's... still really punting on the issue, in part because the Justices don't seem to understand software.

The court relies a lot on two other big recent rulings which we've covered -- the Mayo ruling that rejected medical diagnostic patents and the Myriad Genetics ruling that struck down gene patents, but doesn't quite go as far with software and business method patents. Instead, it sorta half rejects software patents, kinda, without going as far as it needs to go. As some folks are pointing out, the language used in the ruling is "going to tie folks in knots" as they try to figure out what it means.

In the long run, this may be a very important ruling. It's easy to read this ruling to basically reject a very large number of software patents. But, because of the unfortunately all-too-common nature of the Supreme Court semi-punting on clear decisions on this particular issue, it's not entirely clear where this ends up, meaning that there's going to be a lot of patent litigation citing this ruling, with both sides seeking to tap dance around the language choices. And that just means a few years down the road, it's quite likely that we'll be back here again, with the Supreme Court asked to decide, once again, whether or not software and business methods are really patentable.

Still good to have

Re: Still good to have

Takes lots of pressure off people who make apps for use especially on what they hope to argue would be a "generic computer". It leaves the hypothetical industry rubber processes with robots in play (however you define that), but the average computer use (eg, when not attached to industrial creation process.. whatever that might mean to anyone but myself) seems safe. Great ruling.

Re: Re: Still good to have

... After reading some of the ruling, I suspect they might accept when "original" ideas are presented in detail in the patent.

They are unclear and leave room open. They don't say specifically that a computer with attached screen can or can't ever be patentable based on that behavior/screen contents. But they leave some options open, including referencing Diehr (which used computer logic in an "industrial" machine). I think they might accept new algorithms/apps to some extent.

What they did do in part was to eliminated for near certainty the taking of descriptions that don't impress anyone (obvious to a PHOSITA etc) and adding a computer into the process via computer programming.

BTW, I think being non-obvious to a person having ordinary skill in the art is an extremely low standard that would almost surely not result in advancing the progress as anticipated in the Constitution. I hope SCOTUS addresses this issue more carefully some day.

Re: Still good to have

The problem with the ruling, is that I can envision a plausible case where BOTH sides of a dispute reference this SCOTUS ruling as supporting their mutually-exclusive claims.

One side bases their claim on software being unpatentable because it's just giving generic instructions to a generic computer. The other side claims their patent is valid because the patent office wouldn't have granted it if it were invalid, and cites the SCOTUS decision because their ideas were original and creative, not generic.

And under this ruling, given that SCOTUS made two mutually exclusive arguments therein, BOTH sides of the future court case would be 100% correct about what the law says.

The problem with punting is that sometimes it gets returned, and you have to run it in anyway -- which you should have done all along.

Re:

"I feel that at minimum this ruling makes it clear that you can use non-computerized examples of a software patent as prior art, which should help kill some bad software patents."

I agree.While it may not kill software patents completely, this seems to kill the idea of taking generic analog processes and filing a patent by just adding "on a computer."Perhaps it's a minor distinction, but I'm not going to deny the possibility that there are just some things that CAN'T be done outside of software.

Generic...

The court says many software patents are perfectly good because they apply to patent-eligible subject matter, but that if the claims do no more than require a generic computer to perform generic computer functions, it's not patentable.

I read that to mean that generic software running on a generic computer is not protected but software created for non-generic, for example, specifically created hardware for machines with very customized demands, would be protected. I think the ruling is fine in dismissing most things I run in windows and protecting software written for a factories embedded systems.

Re: Generic...

I also got the impression that they were groping their way towards distinguishing general and non-general computing. But they might also be trying to allow for the patenting of truly innovative processes regardless of whether performed on a computer or not.

Re: Generic...

I may be a bit optimistic, but I read the entire thing as:

If the software is only the 'computer translation' of a process or algorithm that, in itself - outside a computer application, is not eligible for patenting, the 'with a computer' addition cannot make it patentable.

More importantly, anything that was already patented cannot be patented again because of simply adding "with a computer" to the claim!

With this I hope that the ruling - finally - understands that doing something 'on a computer' is not innovative in itself.

In other words:As anything patentable, the software-patent-claim must be a truly innovative creation, not just a translation into software of something that is in itself not patentable.

Poorly written article

Re: Poorly written article

Thank you for this reasoned and well thought out criticism of the article. After reading the article and the ruling, I was initially thinking about the ruling and the discussion that the article was clearly trying to start and going to try to add some useful information or possibly some additional perspective.

However, since I read your comment and it so clearly framed all sides and left nothing out, I am unable to add anything helpful to the conversation.

Re: Re: Poorly written article

"Instead, it notes that you can't get a patent if each step claimed in the patent "does no more than require a generic computer to perform generic computer functions." Except, uh, many people will point out that's all that software does. That's basically how software works, but the Justices don't seem to recognize that. So, it's a bit of a conundrum. The court says many software patents are perfectly good because they apply to patent-eligible subject matter, but that if the claims do no more than require a generic computer to perform generic computer functions, it's not patentable."

This article promotes the position that software does no more than require a generic computer to perform generic computer functions. The reader is encouraged to read the opinion with this predisposition and dismiss nine Justices as technologically impaired. It totally ignores the discussion of how the patent at issue fails to fulfill the "add more" requirement

Then the article says this "They seem to think that there's some magic in software that goes beyond just a bunch of instructions for a computer to follow." This totally misses the "add more" discussion again. It also dismisses the analysis of what software actually does, the "intermediary" discussion.

Intel is taking field programmable gate arrays seriously as a means of accelerating applications and has crafted a hybrid chip that marries an FPGA to a Xeon E5 processor and puts them in the same processor socket.

[...more...]

The line between hardware and software has grown increasingly blurry over the past couple decades. No doubt that trend will continue.

But, for this decade, I think Intel is announcing a non-generic computing platform—and it'll run non-generic software.

Re: Generic computing [was Re: Re: Re: Re: Poorly written article]

Translation:

"Intel is taking [hardware] seriously as a means of accelerating [software] and has crafted a hybrid [piece of hardware] that marries a [piece of hardware] to a [piece of hardware] and puts them in the same processor socket."

Do you know how to “program” an IBM Tabulator? Starting with the 1906 Hollerith Type I Tabulator? Going up through the 1949 IBM 407 Accounting Machine? Like ENIAC, the “program” is a plugboard configuration.

Nonsense. A traditional CPU uses gates to control the flow of current. You put current in, you get current out depending on the inputs and the state of the CPU. A FPGA does the exact same thing. What Intel's doing with the Xeon is sexy, but at the end of the day it's still a Turing machine -- just a better-optimized one.

More on topic, it seems generally agreed that microchip designs are eligible for patents. Is anyone seriously proposing that FPGA configurations should be patentable? If so, how would that work?

Quite a few undergraduates have designed “traditional CPUs” in VHDL or Verilog. They're usually graded based (partially) on performance in simulation.

These days, of course, the simulation itself may run in a virtual machine, on virtual cores.

… at the end of the day it's still a Turing machine

A Turing machine, of course, is a precisely-defined model of computation. If we are to be rigorous in using words and definitions, we should remember that the Turing class of machines consists of Turing-equivalents.

So—no: At the end of the day, Intel has announced another Turing-equivalent machine, but not an actual Turing machine.

Is anyone seriously proposing that FPGA configurations should be patentable?

Certainly not me. Rather, I'm pointing out that a distinction based on actual silicon, transistors, caps, all hardwired and soldered—versus simulated,virtualized and reconfigurable machines—is a distinction built on shifting sand in the middle of a stream.

Otoh, I don't really expect anyone who isn't intimate with the technology to really understand how a design may be moved from simulation to FPGA to ASIC.

Re: Re: Re: Poorly written article

Oddly enough this is a reply worth reading. Your original was a waste of bandwidth and oxygen. Although you still miss the point of the well written article. The court saying 'that in theory' software is patentable is fine for now. They truly do not appear to understand that 99% of all software meets their first requirement and thus is not patentable.

Software doesn't do more than math and generic functions. True some specific hardware/software combinations for specific patented process may well be patent worthy. With the current set of hardware commonly available to all ... I have trouble even imagining one that would pass the test.

Re: Poorly written article

Bilski and Congress

It didn't seem to me that SCOTUS punted on Bilski but instead handed it off to Congress. SCOTUS reasoned that technological advances had outgrown current Patent legislation by so much that they would no longer be interpreting the law and instead would be creating it, and so it was time for Congress to step in. Naturally Congress has yet to pass legislation addressing software/process patent issues.

No matter how small, I'm glad that SCOTUS did something - I've not read the decision yet but am guessing that creating precedent was done somewhat reluctantly.

Unfortunately this effectively rewards Congress for not doing what it is supposed to do; I guess SCOTUS hasn't done a lot of child-raising to know that's a bad idea.

This should be pretty obvious, but apparently...

Well, I can see from the comments here, there, and other places that SCOTUS is getting some flack. As much as they deserve criticism (and boy do they ever for many things), this situation isn't one of them.

Patent Laws are written by.... Congress.

The SCOTUS doesn't want to, and indeed can't, rule on the total mess that the US patent law has going on now.

We need updated laws for that to happen in any way other than slowly, painfully, specifically, and over lots of time.

I read this slightly more positively. It seems to me that the ruling requires that any patent has a core patentable idea. There are some ideas that are only only really make sense in the IT environment, where a computer is a necessary element.

Oops

Looks like you fell for the SCOTUS sense of humor... This week everyone is reporting that Software Patents are still legit according to the USPTO's new direction on patents which didn't change anything at all. Nothing happened here. We need to keep fighting!